Who am I? Branding the Indian Patent Office as an “Adjudicative Regulator”

Some of you may have heard of an exceptional book series on intellectual property (IP) called “Kritika”. Published by Edward Elgar and edited by the wonderful trio of Professor Peter Drahos, Hanns Ullrich and Gustavo Ghidini.

This SSRN link offers you a free download of the near final version of this piece. The link to the book series etc is here. If you cannot get hold of the final published piece, please let me know.

For those interested, the abstract is below. The paper cuts across patent law and constitutional/administrative law. And a bit of metaphysics as well (as evident from the title). It draws from this post of mine published in 2016.

It proposes a new label called “Adjudicative Regulators”. We’re hoping that this new brand could help define other government agencies as well that perform a significantly “adjudicative” task.

ABSTRACT

“Who am I? Of Patent Independence and ‘Adjudicative Regulators’”.

In this paper, we reflect on the question: who or what exactly is the patent office? And how best do we secure its judicial proficiency and independence? We offer a framework for assessing the above question, after cutting through the vast morass of often confusing case law in this regard that has failed to draw a conceptually sound distinction between the judicial, the quasi-judicial and the administrative.

We argue that agencies such as the patent office tasked with a high level of adjudicatory functions are predominantly “judicial” in character and ought to therefore be categorized as “Adjudicative Regulators.” As such they are to be vested with a significant degree of judicial competence and independence. We offer some broad suggestions in this regard.

Our frame is likely to be useful for characterizing other regulatory agencies with predominant judicial functions, and could well prove instructive for agencies in other countries with legal regimes similar to that of India.”

I also reproduce the introductory section below.

INTRODUCTION

Who am I? An eternal enigma that has confounded the best of existential philosophers. A question that might even be posed by institutions such as the patent office, as a recent controversy in India demonstrates.

While the Department of Industrial Policy and Promotion (“DIPP”), an Indian government agency that oversees the functioning of the patent office, labels the office as a scientific organisation, the Department of Expenditure (“DoE”) insists that it is nothing more than an administrative agency.

Although this titular tussle took place within a rather limited frame (the applicability or otherwise of certain service benefits in the form of a time bound career advancement scheme), it forces us to interrogate the true nature of the patent office.

An interrogation that assumes prominence given a very controversial allegation last year that the Indian government made a private secret assurance to US pharma lobbies that it would not invoke compulsory licensing provisions in the Patents Act, 1970 for commercial purposes; an assurance that raises profoundly troubling questions about the autonomy and independence of the patent office.

To be sure, the Government issued a subsequent clarification stating that it never made any such assurance. However, the meekness of the clarification reinforces the suspicion that the Government may not be averse to the idea of withering away statutory safeguards such as compulsory licensing. Indeed, soon after the Government issued this clarification, the National Human Rights Commission asked the Government to submit a report as regards its stance on this issue. Further, Lee Pharma and BDR Pharma, two generic manufacturers that were seeking the grant of a compulsory license, chose not to appeal against the rejection of their application in light of reports of this private assurance.

Questions as to the integrity and independence of the office again took centre stage when a patent controller (Hardev Karar), who denied a patent to a major US pharmaceutical company over a highly contentious Anti HCV drug (Sovaldi) was taken to task by his superiors. Soon after Karar’s ouster from the case (pursuant to a court order remanding the case for a fresh determination to the patent office), another patent official came to the exact opposite conclusion; and went on to grant the patent, deploying reasoning that can only be described as dubious.

All of this throws into question the independence of the patent office. It is from this vantage point that we ask the larger question: Who or what is the patent office? And how best do we secure its independence?

We begin by exploring the current controversy in India as to whether or not the patent office is a “scientific” establishment or merely an administrative office. We then point to the fact that Indian courts have characterized executive agencies vested with “judicial” functions (such as the patent office) as “quasi-judicial” bodies. However, there is, as yet, no conceptually clear boundary between the purely administrative, the quasi judicial and the purely judicial. Courts are yet to define the term “quasi-judicial” with any precision.

While steering clear of such definitional precision (a task we fear may demand a full-fledged paper in its own right), we suggest that, at the very least, quasi-judicial bodies could be categorized into two classes: those whose predominant function is a judicial one (such as the patent office), from those whose judicial function is merely incidental. We propose that agencies at the higher end of the “judicial” spectrum be categorized as “adjudicative regulators” and vested with a significant degree of autonomy and independence.

A number of prominent scholars have argued that the patent office is a regulatory agency and that patents ought to be viewed through a regulatory lens. The US judiciary has drawn on this sentiment, albeit in the context of administrative law and the extent of deference to be accorded by courts to patent office decisions.

We draw on this insight and develop it further to suggest that the patent office is no ordinary regulator, but one whose predominant function is adjudicative in nature. As such, we label it as an adjudicative regulator (AR).

We end by offering concrete suggestions for vesting adjudicative regulators such as the Indian patent office with greater autonomy and independence.”

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools.
He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF).
In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen.
Professional History:
After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer.
He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school.
Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

One comment.

While it was not yet able to go through the chapter in detail, isnt Section 77 of the Act itself telling that the powers being exercised by the Controller are no less than that of a Civil court?
I did not notice any discussion on that and hence, my humble comment!

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Leading IP Academics Fired

This protest petition against unfair dismissals of Prof. N. S. Gopalakrishnan, Ministry of Human Resource Development (MHRD) Chair Professor at Cochin University of Science and Technology (CUSAT) and Prof. Yogesh Pai, MHRD Chair Professor at National Law University at Jodhpur, is now closed.

It was posted on SpicyIP blog on August 28, 2013 by Prof. Shamnad Basheer. Link to petition here: http://spicyipindia.blogspot.in/2013/08/leading-ip-academics-fired-protest.html